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National Retail Federation, Inc. v. Luigi Marruso
Case No. D2006-0275
1. The Parties
The Complainant is National Retail Federation, Inc., Washington, DC, United States of America.
The Respondent is Luigi Marruso, Asti, Italy.
2. The Domain Name and Registrar
The disputed domain name <nrf.org> is registered
with Webagentur.at Internet Services GmbH d/b/a domainname.at.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 3, 2006. On March 6, 2006, the Center transmitted by email to Webagentur.at Internet Services GmbH d/b/a domainname.at a request for registrar verification in connection with the domain name at issue. On March 8, 2006, Webagentur.at Internet Services GmbH d/b/a domainname.at transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2006. A Response was sent to the Center on March 20, 2006, and it acknowledged receipt on March 22, 2006.
The Center appointed Edward C. Chiasson Q.C. as the
Sole Panelist in this matter on April 4, 2006. The panelist submitted a Statement
of Acceptance and Declaration of Impartiality and Independence, as required
by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds
that it was properly constituted.
4. Factual Background
The following information derives from the Complaint.
The Complainant is the owner of the following subsisting United States Registrations of the marks NRF and NATIONAL RETAIL FEDERATION, among others:
(1) Registration No. 2,320,609 of the mark NATIONAL RETAIL FEDERATION (Stylized), for educational services, namely, conducting seminars, conferences, workshops, in the field of the retail trade, and distributing course materials in association therewith, which issued February 22, 2000;
(2) Registration No. 2,320,608 of the mark NATIONAL RETAIL FEDERATION (Stylized), for association services, namely, promoting the interests of retail merchants, retailers, store owners, business owners, and others associated with the retail trade, which issued February 22, 2000;
(3) Registration No. 2,334,617 of the mark NATIONAL RETAIL FEDERATION (Stylized), for periodicals and publications namely, pamphlets, brochures, books, magazines, newsletters, and journals devoted to providing news and information to the retail trade, which issued March 28, 2000;
(4) Registration No. 2,337,484 of the mark NRF, for educational services, namely, conducting seminars, conferences, workshops, in the field of the retail trade, and
(5) Registration No. 2,261,155 of the mark NRF, for association services, namely, promoting the interests of retail merchants, retailers, store owners, business owners, and others associated with the retail trade, which issued July 13, 1999.
In addition, the Complainant owns a pending application to register the mark NRF in the European Community which was filed September 8, 2005.
The Complainant is the registered owner of the domain name <nrf.com>. In fact, the domain name and website at “www.nrf.com” are the primary means by which NRF members and the general public can obtain information pertaining to membership in the Complainant, its services and upcoming conferences and exhibitions sponsored by the Complainant.
The Complainant is the world’s largest retail trade association and has been doing business for more than 95 years. The Complainant’s membership comprises all retail formats and channels of distribution including department, specialty, catalog, Internet, independent stores, chain restaurants, drug stores and grocery stores as well as the industry’s key trading partners of retail goods and services.
The Complainant represents an industry with more than 1.4 million United States’ retail establishments, more than 23 million employees and 2005 sales of $4.4 trillion. As the industry leader, the Complainant also represents more than 100 state, national and international retail associations.
In addition, the Complainant provides association services, educational services, publications and other services devoted to providing news and information to the retail trade.
The Complainant has used the names and marks NRF and NATIONAL RETAIL FEDERATION to identify itself to its members and the general public since at least as early as 1990. These marks are displayed prominently throughout the Complainant’s website.
The Complainant continuously has used the marks NRF and NATIONAL RETAIL FEDERATION, alone and in combination with other words and designs, on or in connection with such goods and services and in the advertising and sale thereof in the United States since 1990.
The Complainant is a not-for-profit organization and has spent substantial time and energy advertising and promoting its retail trade services under the names and marks NRF and NATIONAL RETAIL FEDERATION.
The Complainant also publishes two magazines entitled “Stores” and “NRF LP Iformation” and an official e-Newsletter entitled “NRF Update” which can be accessed through its official website at “www.nrf.com”. Each of these publications bears the NRF name and mark.
The Complainant also sponsors and hosts a significant variety of conferences and exhibitions related to the retail industry.
The Complainant also uses the marks NRF and NATIONAL RETAIL FEDERATION in Europe, having sponsored the NRF ARTS Retail Technology Summit in London for the last three years.
The subject domain name was registered by the Respondent on August 17, 2005. He is using the subject domain name for a directory website that is commercial in nature.
The web directory to which the subject domain name initially resolved displayed links entitled “National Retail Federation 2006”, “Retail” and “Trade Shows”, More specifically, the website at “www.nrf.org” originally resolved to a directory web page with numerous links about retail-related goods and services, including, trade shows and directed Internet users to websites and businesses providing goods and services which are related commercially to retail-related goods and services provided by Complainant.
The Complainant has not licensed or otherwise authorized the Respondent to use the names and marks NRF and NATIONAL RETAIL FEDERATION.
The Respondent does not do business under the names NRF or NATIONAL RETAIL FEDERATION.
On February 13, 2006, the Complainant’s counsel sent the Respondent a cease-and-desist letter. Shortly thereafter, the Respondent altered the contents of his web directory to remove any links associated with the Complainant’s goods or services.
In a February 13, 2006, email to counsel for the Complainant the Respondent advised that he owns various domain names composed of “3 letters”, all of which are redirected on a PPC (pay-per-click) program with which the Respondent is affiliated.
In his email of February 13, 2006, the Respondent claimed that the PPC network with which he is affiliated displayed the “National Retail Federation 2006” link, which previously appeared on his web directory.
Currently, the website to which the subject domain resolves contains a directory web page providing links for a wide variety of goods and services, none of which are associated with the goods and services provided by the Complainant.
The following information derives from the Response.
The Respondent owns a few hundred web domains. He denies that he is a cybersquatter and states, “…I register only generic names including 3 letters (I’ve over 50 addresses of this kind, short and easy to remember) + generic single and composed words in various languages”.
The Respondent parks everything with DomainSponsor.com, a PPC program which pays him based on the clicks and searches conducted by final visitors.
The Respondent lives in Asti, Northern Italy and states that he had not heard about the Complainant until he received counsel’s letter. Having done so he checked what was advertised by Dsponsor on the website to which the subject domain resolved and noticed that some links related to the Complainant. Dsponsor has an automated system, which optimizes search results with the most targeted links and sponsors for each domain.
The Respondent contacted and apologized to counsel and removed the reference to the Complainant from the website.
The Respondent registered the subject domain name because it was available and had no intention to sell it to the Complainant, to disrupt the Complainant’s business or to confuse others.
The Respondent changed the webpage to which the subject domain resolved because he does not want to interfere with another’s trademark rights. The Respondent states:
“…I can legally and honestly earn some revenue with tons of ‘Generic Sponsors’”.
The Respondent says: “I’m not using traffic
coming from the “National Retail Federation” but come from people
who digit nrf.org for various reasons and different intents …”.
5. Parties’ Contentions
The Complainant relies on its use and registration of NATIONAL RETAIL FEDERATION and NRF says that the subject domain name is identical to its mark NRF.
The Complainant contends that the Respondent does not have a legitimate interest in the subject domain name because he is not known by it and is not authorized to use the Complainant’s name and marks.
Bad faith is said to be evidenced by the notoriety of the Complainant’s use of its name and marks and by the fact that the subject domain name initially resolved to a website which dealt with the same products of the Complainant and referred to it by name.
The Complainant contends that the Respondent’s explanations should not be accepted and that, in any event, he is responsible as owner of the subject domain name for the initial use of the subject domain name directly in relation to the Complainant and its products.
The Respondent asserts that parking domain names with DomainSponsor.com is, “…a totally legal activity considering I’m not using third parties domains/trademarks/company names or typos to do this”.
The Respondent contends:
“Generic 3letters are acronyms which might have multiple meanings so yes, while (we might say) in advance that page was showing related results to their company, after I had permanently disabled the auto optimization, that page began to display generic results so I see no other violation or reason for whom I should not continue to use such domain.
The [subject domain name] is composed solely of the
common 3-letter combination NRF. NRF is a very common abbreviation used by thousands
of third parties for many different word combinations. An advanced search on
the Google.com search engine for ‘NRF’, yielded over 3,110,000 web
pages containing the common 3-letter combination.”
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain names registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names;
(ii) registration of the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain names primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The parties rely on previous domain name dispute decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.
A. Identical or Confusingly Similar
There is no real issue concerning the fact that the subject domain name is identical to the registered mark of the Complainant. The Respondent essentially accepts this fact.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While not conceding that he does not have a legitimate interest in the subject domain name, the Respondent’s position is that he has no desire to tread on the rights of the Complainant, which rights he recognizes.
The Respondent is not authorized to use the Complainant’s name or marks and is not known commonly by them or by the subject domain name.
The Administrative Panel does not comment on whether the generic search business described by the Respondent is legitimate under the Policy, but in this case there is no documentation to support the Respondent's assertions. Moreover, if the Respondent knew of the Complainant and its trademark at the time of registration of the subject domain name (this will be discussed under the bad faith section below) the Respondent's registration and use of the subject domain name would not have been legitimate.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Administrative Panel accepts the Complainant’s position that the Respondent is responsible for the initial use of the Complainant's name on the website to which the subject domain name resolves.
Although the Respondent asserts that it was by happenstance that he selected NRF for the subject domain name, the specific reference on the website to which the subject domain resolves of the name and products of the Complainant, undermines that assertion.
Although the Respondent states that he has no desire to interfere with the Complainant’s trademark rights and that he can make money using other “Generic Sponsors”, the fact is that he continues to use the subject domain name and it continues to interfere with the Complainant’s trademark rights.
The Administrative Panel is satisfied that the Complainant has met the requirements
of paragraph 4(a)(iii) of the Policy.
Based on the information provided to it by the parties and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.
The Complainant requests that the subject domain name <nrf.org> be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: April 18, 2006